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` UNITED STATES PATENT AND TRADEMARK OFFICE
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`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`
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`
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`PETROLEUM GEO-SERVICES INC.
` Petitioner
`
` v.
`
`WESTERNGECO LLC
` Patent Owner
`
`
`
`
` Case No. IPR2014-00679
` Patent No. 6,691,038
`
`
`
`
`
`
`
`
`
`
`PETITIONER’S RESPONSES TO PATENT OWNER’S
`INTERROGATORIES TO PETITIONERS
`
`Pursuant to 37 C.F.R. § 42.51(c), Petitioner Petroleum Geo-Services, Inc.
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`(“PGS”), through its counsel, hereby provides the following objections and
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`responses to “Patent Owner’s Interrogatories to Petitioners” (“Interrogatories”) as
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`provided via email on August 28, 2014.
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`
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`WesternGeco Ex. 2011, pg. 1
`IPR2015-00567
`ION v WesternGeco
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`GENERAL OBJECTIONS
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`The following General Objections form a part of, and are hereby
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`incorporated into, the response to each and every question set forth below. Nothing
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`in those responses, including any failure to recite a specific objection in response to
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`a particular request, should be construed as a waiver of any of these General
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`Objections.
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`1.
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`PGS objects to the definition of “petitioners” in the prefatory language
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`and caption of the Interrogatories to the extent that it suggests that the petitioners in
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`this proceeding include any entities other than Petroleum Geo-Services, Inc.
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`Petroleum Geo-Services, Inc. is the only petitioner in this proceeding.
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`2.
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`PGS objects to each interrogatory, definition, and instruction as
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`overbroad to the extent that the Interrogatories purport to include a Request For
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`Production of Documents. Prior to serving its Interrogatories, Patent Owner had
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`not requested —via communication with Petitioner’s counsel or the Board—to
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`serve a Request For Production on Petitioner, and Petitioner has not agreed to
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`provide any such discovery.
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`3.
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`PGS objects to each interrogatory, definition, and instruction to the
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`extent that it attempts to impose any discovery duties on PGS beyond the scope of
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`discovery affirmatively imposed or agreed to by any applicable rule, law, doctrine,
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`or accepted practice.
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`2
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`WesternGeco Ex. 2011, pg. 2
`IPR2015-00567
`ION v WesternGeco
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`4.
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` The responses given herein to any one or more of the interrogatories
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`shall not be deemed to waive any claim of privilege or immunity that PGS may
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`have as to any response, document, or information, or any objection that PGS may
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`have as to a demand for further response to these or other interrogatories. During
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`the teleconference, the Board advised that: “The agreement is that Patent Owner
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`will today seek to get an agreement that answering any interrogatories would not
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`be used as a waiver of privilege in District Court litigation.” Tr. 39:16-19. Patent
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`Owner’s statement includes Condition No. 10: “WesternGeco reserves the right to
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`argue that PGS’s affirmative reliance on any documents or information produced in
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`response to the interrogatories may constitute a waiver of privilege held by the
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`producing party.” In propounding this Condition No. 10, Patent Owner
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`affirmatively has declined to agree to the precondition of PGS’s offer to provide
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`discovery responses.
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`5.
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`Petitioner objects to Condition No. 10. However, in an effort to
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`resolve the dispute regarding the scope of discovery without the Board’s
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`intervention, PGS nevertheless provides the responses to Patent Owner’s
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`interrogatories, subject to the objections set forth herein, despite the fact that
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`discovery has not been ordered by the Board and is not warranted by governing
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`precedent.
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`3
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`WesternGeco Ex. 2011, pg. 3
`IPR2015-00567
`ION v WesternGeco
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`6.
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`PGS objects to each interrogatory, definition, and instruction as overly
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`broad, unduly burdensome, and not reasonably calculated to lead to the discovery
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`of admissible evidence to the extent that it seeks information concerning any
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`subject other than ION’s alleged participation in the preparation or prosecution of
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`the “PGS IPR Proceedings” (defined below). In response to a request for guidance
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`as to the appropriate scope of any potential discovery, the Board advised that:
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`“And given that, then both sides will endeavor to negotiate on five interrogatories
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`related to ION's participation in the IPR, hopefully by the end of this week.” Tr. at
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`39:20-23. And Patent Owner represented to the Board that “My reaction is we are
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`interested in communications that link ION, obviously, to this IPR effort. If the
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`question is do we have a cutoff date, for example, once the IPR was filed, no.
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`We’re looking at communications that lead up to the preparation of that petition.
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`And so, you know, certainly we’re only looking for communications relating to the
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`IPR effort.” Tr. at 36:10-19. To the extent that discovery sought does not pertain
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`to ION’s alleged participation in the preparation or prosecution of the PGS IPR
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`Proceedings, PGS declines to provide such information and has not included such
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`information in its responses below.
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`7.
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`PGS objects to each interrogatory to the extent that it calls for the
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`disclosure of information protected by any privilege, including, without limitation,
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`the attorney-client privilege, the work product doctrine, the common interest
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`4
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`WesternGeco Ex. 2011, pg. 4
`IPR2015-00567
`ION v WesternGeco
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`privilege, or any other available and valid grounds for withholding information
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`from production. All interrogatories have been read to exclude the discovery
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`and/or production of such privileged information
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`8.
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`PGS’s responses herein are based on facts presently known to PGS
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`and represent a diligent and good faith effort to respond to the interrogatories.
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`PGS’s discovery and investigation into the matters specified is continuing. PGS
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`reserves the right to supplement, alter or change its responses and objections to
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`these interrogatories and to provide additional responsive information, if any, that
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`PGS has in its possession, custody, or control at the time the interrogatories were
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`propounded.
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`DEFINITIONS
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`1.
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`“PGS” means Petroleum Geo-Services, Inc. Although Patent Owner
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`has not sought leave to serve discovery on PGS Geophysical AS or Petroleum
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`Geo-Services ASA, PGS has conducted a reasonable investigation including PGS
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`Geophysical AS and Petroleum Geo-Services ASA, and PGS’s responses below do
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`not exclude information that would have been provided by these entities had they
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`been required to answer the following interrogatories.
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`2.
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`“ION” means ION Geophysical Corporation, an employee of ION, or
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`a person acting as an agent of ION within the scope of that agency.
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`5
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`WesternGeco Ex. 2011, pg. 5
`IPR2015-00567
`ION v WesternGeco
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`3.
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`“ION Litigation” means the civil action WesternGeco L.L.C. v. ION
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`Geophysical Corp. et al., 4:09-cv-01827 (S.D. Tex.).
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`4.
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`5.
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`“Williams & Connolly” means Williams & Connolly LLP.
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`“PGS IPR Proceedings” means Inter Partes Review Case Nos.
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`IPR2014-00678; IPR2014-00687; IPR2014-00688; and IPR2014-00689.
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`6.
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`“Challenged Patents” means U.S. Patent Nos. 6,691,038; 7,162,967;
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`7,080,607; and 7,293,520—the patents challenged in the PGS IPR Proceedings.
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`7.
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`“PGS IPR Petitions” means the petitions filed in the PGS IPR
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`Proceedings seeking institution of Inter Partes Review.
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`RESPONSES AND OBJECTIONS TO SPECIFIC INTERROGATORIES
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`INTERROGATORY NO. 1:
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`Disclose and describe all meetings and calls between PGS (or its counsel)
`and ION (or its counsel) regarding the validity of WesternGeco’s patents, such as
`the February 14, 2014 conference call between Williams & Connolly, Porter &
`Hedges and Phil Shotts, such disclosure and description including but not limited
`to:
`
`(a)
`
`the date and time of the meeting or call;
`
`(b)
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`the names and affiliations of the individuals involved;
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`(c)
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`the topics discussed, including whether any inter partes review--
`instituted, petitioned, or under consideration--was discussed;
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`(d)
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`any documents exchanged or discussed
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`RESPONSE:
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`6
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`WesternGeco Ex. 2011, pg. 6
`IPR2015-00567
`ION v WesternGeco
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`PGS objects to the scope of this interrogatory as set forth in General
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`Objection No. 6. PGS further objects to this interrogatory as vague and ambiguous
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`with respect to the meaning of “WesternGeco’s patents.” To the extent that this
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`term refers to patents other than the Challenged Patents, PGS objects to this
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`request as overbroad. PGS objects to this interrogatory to the extent that it calls for
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`the disclosure of information protected by any privilege or protection.
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`
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`Subject to and without waiving the foregoing specific objections and the
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`General Objections, and based on the non-privileged information reasonably
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`available to PGS, PGS states that:
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`
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`There were no meetings between PGS and ION concerning the PGS IPR
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`Proceedings.
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`
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`There was only one call between counsel for PGS and counsel for ION
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`regarding validity of any Challenged Patent and that related in any way to the PGS
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`IPR Proceedings. The conference call was requested by counsel for PGS to learn
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`particular facts about the ION Litigation. Regarding this single conference call:
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`(a) The conference call occurred on February 14, 2014 at approximately
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`11:30 AM EST, and lasted no more than 30 minutes.
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`(b)
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`Jessamyn Berniker, William Doffermyre, and Alec Swafford from
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`Williams & Connolly were on the call. Kevin Hart from PGS was on
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`7
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`WesternGeco Ex. 2011, pg. 7
`IPR2015-00567
`ION v WesternGeco
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`the call. To the best of PGS’s knowledge, Phillip Shotts of ION and
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`Jonathan Pierce from Porter & Hedges were on the call.
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`(c) Consistent with the purpose of the call, counsel for PGS asked counsel
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`for ION whether, and if so on what basis, WesternGeco had disputed
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`during the ION Litigation the prior art status of PCT Application No.
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`WO98/28636 (the ’636 PCT) in relation to Patent Nos. 7,162,967,
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`7,080,607, and 7,293,520. In this context, the statute 35 U.S.C. § 363
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`was also discussed. Neither the substance of, nor the disclosures
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`contained in, the ’636 PCT or any other prior art reference were
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`discussed.
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`(d) No documents were exchanged during the conference call. In two
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`follow-up email messages from Jonathan Pierce to Kevin Hart and
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`Philip Shotts, Mr. Pierce identified two cases relating to 35 USC §
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`363 that Mr. Pierce represented had been discussed with WesternGeco
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`counsel in the context of discussing jury instructions during the ION
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`Litigation: (1) Broad. Innovation, L.L.C. v. Charter Communications,
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`Inc., 420 F.3d 1364, 1365-69 (Fed. Cir. 2005); and (2) Sanitec Indus.
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`v. Micro-Waste Corp., CIV.A. H-04-3066, 2006 WL 3455000 (S.D.
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`Tex. Nov. 28, 2006) aff'd sub nom. Sanitec Indus., Inc. v. Micro-
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`Waste Corp., 296 F. App’x 44 (Fed. Cir. 2008) - Sanitec Indus., Inc. v.
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`8
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`WesternGeco Ex. 2011, pg. 8
`IPR2015-00567
`ION v WesternGeco
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`Micro-Waste Corp., 296 F. App’x 44, 45 (Fed. Cir. 2008). PGS cited
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`neither case in the IPR Petitions.
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`Although not a call or meeting between PGS and ION, PGS in-house
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`counsel Kevin Hart left a voicemail for ION in-house counsel Phillip Shotts on or
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`about June 2, 2014. Mr. Hart left the voicemail in response to an unsolicited email
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`from Mr. Shotts, which was produced in district court litigation between Patent
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`Owner and PGS (PGSI-T2725-0047296). In his email, transmitted after the PGS
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`IPR Petitions had been filed, Mr. Shotts stated that he had been contacted by a
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`company dealing in technology developed in the former Soviet Union that claimed
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`to possess prior art to the Challenged Patents. In the email, Mr. Shotts inquired
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`about deadlines in the PGS IPR Proceedings. In his voicemail, Mr. Hart
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`acknowledged receipt of the email but declined at the time to engage in a
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`discussion concerning the company referenced in the email or any prior art. And
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`Mr. Hart has not had any discussions with Mr. Shotts concerning these topics since
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`then.
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`
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`PGS is also aware of an email chain that was produced in district court
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`litigation between Patent Owner and PGS (PGSI-T2725-WG-0046686). This
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`email chain begins with a request by PGS in-house counsel Kevin Hart on behalf
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`of “PGS/Irell” (Irell & Manella LLP is PGS’s trial counsel) for copies of ION’s
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`invalidity contentions from the ION Litigation because “receiving them from WG
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`9
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`WesternGeco Ex. 2011, pg. 9
`IPR2015-00567
`ION v WesternGeco
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`[Patent Owner] would take some time.” ION’s outside counsel Jonathan Pierce
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`provided copies of ION’s non-confidential invalidity contentions to Irell &
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`Manella LLP and Mr. Hart. Patent Owner subsequently produced these materials
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`to PGS in the district court proceedings approximately three weeks after ION’s
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`counsel provided them to Irell & Manella. Mr. Hart did not refer to or use these
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`materials in connection with the PGS IPR Proceedings. Williams & Connolly did
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`not refer to or use these materials in connection with the PGS IPR Proceedings.
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`INTERROGATORY NO. 2:
`
`Disclose and describe any common interest privilege alleged to exist over
`communications between PGS or its representatives and ION or its representatives
`regarding the validity of WesternGeco’s patents, such disclosure and description
`including but not limited to:
`
`(a)
`
`the common interest(s) alleged to exist;
`
`(b)
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`the date the common interest(s) began;
`
`(c)
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`the date the common interest(s) ended;
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`(d)
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`any joint defense or other agreement related to any common interest
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`RESPONSE:
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`
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`PGS objects to the scope of this interrogatory as set forth in General
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`Objection No. 6.
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`
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`Subject to and without waiving the foregoing specific objections and the
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`General Objections, and based on the non-privileged information reasonably
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`available to PGS, PGS states that:
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`10
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`WesternGeco Ex. 2011, pg. 10
`IPR2015-00567
`ION v WesternGeco
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`PGS does not contend, and never has contended, that any form of common
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`interest privilege exists between PGS and ION in connection with the PGS IPR
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`Proceedings. Accordingly, there is no date on which a common interest in
`
`connection with the PGS IPR proceedings began or ended, and there is no joint
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`defense or other agreement related to any such common interest.
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`INTERROGATORY NO. 3:
`
`Disclose and describe any agreements regarding William & Connolly’s
`retention in connection with the Petitions, including but not limited to:
`
`(a)
`
`any retention agreement;
`
`(b)
`
`any invoices or remittances;
`
`(c)
`
`(d)
`
`any cost-sharing or indemnity agreements, including between PGS
`and ION;
`
`any ION contributions or reimbursements for any expenses related to
`the Petitions or the preparations thereof.
`
`RESPONSE:
`
`
`
`PGS objects to the scope of this interrogatory as set forth in General
`
`Objection No. 6. PGS objects to this interrogatory to the extent that it calls for the
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`disclosure of information protected by any privilege or protection.
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`
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`Subject to and without waiving the foregoing specific objections and the
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`General Objections, and based on the non-privileged information reasonably
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`available to PGS, PGS states that:
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`11
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`WesternGeco Ex. 2011, pg. 11
`IPR2015-00567
`ION v WesternGeco
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`Williams & Connolly has no retention agreement with ION in connection
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`with the PGS IPR Proceedings. Williams & Connolly has no agreements of any
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`kind with ION.
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`
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`Williams & Connolly has not provided any invoices to ION or received any
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`remittances from ION, directly or indirectly, in connection with the PGS IPR
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`Proceedings.
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`
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`PGS does not have any cost sharing or indemnity agreements with ION in
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`connection with the PGS IPR Proceedings.
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`
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`ION has not provided Williams & Connolly or PGS with any contributions
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`or reimbursements for any expenses of any kind related to the PGS IPR
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`Proceedings.
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`INTERROGATORY NO. 4:
`
`Disclose and describe any prior art references that ION or its counsel
`disclosed to PGS or its counsel, such disclosure and description including but not
`limited to:
`
`(a)
`
`the identity of the reference;
`
`(b)
`
`the date of the disclosure;
`
`(c)
`
`the names and affiliations of the people involved;
`
`(d)
`
`any discussions associated with or subsequent to the disclosure.
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`RESPONSE:
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`
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`PGS objects to the scope of this interrogatory as set forth in General
`
`Objection No. 6. PGS objects to this interrogatory to the extent that it calls for the
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`12
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`WesternGeco Ex. 2011, pg. 12
`IPR2015-00567
`ION v WesternGeco
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`disclosure of information protected by any privilege or protection. PGS further
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`objects to this interrogatory to the extent that its use of the word “counsel” is
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`ambiguous; PGS interprets it to mean PGS’ in-house counsel or PGS’ counsel in
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`the PGS IPR Proceedings, Williams & Connolly.
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`
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`Subject to and without waiving the foregoing specific objections and the
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`General Objections, and based on the non-privileged information reasonably
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`available to PGS, PGS states that:
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`
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`No prior art references have been disclosed by ION or its counsel to PGS or
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`Williams & Connolly in connection with the PGS IPR Proceedings. Any
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`communications in connection with the PGS IPR Proceedings with ION
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`concerning prior art references are described in PGS’s Response to Interrogatory
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`No. 1.
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`INTERROGATORY NO. 5:
`
`Disclose and describe all communications between PGS or its counsel and
`ION or its counsel regarding indemnification for infringement of WesternGeco’s
`patents, including but not limited to:
`
`(a)
`
`(b)
`
`(c)
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`any agreements related to indemnity for infringement of
`WesternGeco’s patents;
`
`any claims or requests for indemnity for infringement of
`WesternGeco’s patents;
`
`any discussions regarding litigation funding or expenses patent
`disputes with WesternGeco.
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`RESPONSE:
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`13
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`WesternGeco Ex. 2011, pg. 13
`IPR2015-00567
`ION v WesternGeco
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`PGS objects that the scope of this interrogatory as set forth in General
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`Objection No. 6. PGS objects to this interrogatory to the extent that it calls for the
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`disclosure of information protected by any privilege or protection.
`
`
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`Subject to and without waiving the foregoing specific objections and the
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`General Objections, and based on the non-privileged information reasonably
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`available to PGS, PGS states that:
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`There are no agreements relating to indemnity, requests for indemnity, or
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`“discussions regarding litigation funding or expenses [sic] patent disputes”
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`between PGS and ION relating to the PGS IPR Proceedings.
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`ION is a supplier to PGS affiliates of, inter alia, software and devices.
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`Accordingly, PGS affiliates do have agreements with ION that contain warranty or
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`indemnity provisions that, for example, protect against claims “made by third
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`parties.” The PGS IPR Proceedings were filed by PGS. Although a PGS affiliate
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`has informed ION that Patent Owner has asserted a claim relating to the use of
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`devices provided by ION, neither PGS nor its affiliates have made demands to ION
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`concerning the Challenged Patents under any such warranty or indemnity
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`provision.
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`
`
` /s/ David I. Berl
`By:
`David I. Berl
`Attorney for Petitioner
`Petroleum Geo-Services, Inc.
`Registration No. 72,751
`
`Date: September 4, 2014
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`14
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`WesternGeco Ex. 2011, pg. 14
`IPR2015-00567
`ION v WesternGeco
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